Duane H. Mathiowetz

RELEVANT EXPERIENCE

Duane has spent his career litigating a wide range of IP related matters spanning across many industries. Most recently, he was a partner at a boutique commercial litigation law firm where he managed their tech-related IP litigation matters including the complex defense of a start-up in a patent infringement and trade secret misappropriation defense case; and served as co-counsel on a multimillion-dollar post-arbitration settlement on a commercial/employment litigation action.

He was also a partner at Foley & Lardner where he represented start-ups and SMBs in patent, trademark, copyright, and unfair competition matters involving consumer and commercial products, including IP infringement resolution for a cannabis start-up’s distillation tech; patent, trademark, and copyright settlement for a Hong Kong-based online retail and consumer products company; and patent monetization advising for the inventor of a machine learning-based text-to-speech tool, and the inventor of a dual-factor authentication technology.

At LeClairRyan LLP, he litigated patent and copyright matters for domestic and foreign companies, including successful representation of a Taiwanese optical image-sensing technology company against a $100M+ claim in district court, and concurrently prosecuted PTAB validity challenge and filed a unique legitimacy challenge to the plaintiff’s patent assignment in bankruptcy court; and defended a German start-up in a wind tunnel technology patent infringement case.

At Schiff Hardin LLP Duane represented an app / software development firm against a predatory patent licensing company seeking $100M+ in a multi-party mobile-ordering patent dispute; filed a plaintiff action on behalf of a $500M utility boom truck manufacturer on a trade secret misappropriation and wrongful claim of inventorship; and secured early, no-payment dismissal of IP/breach of contract claims relating to deployment of an internet reservations software.

Duane’s areas of expertise include:

Patent litigation and counseling, patent monetization, trademark, copyright, unfair competition, and trade secret litigation, commercial litigation, mediation and arbitration of technology disputes.

REPRESENTATIVE MATTERS

David Senescu v. Keating, Inc., JAMS Abitration, 2018-2019. Represented defendant in employment/breach of contract and fiduciary duty litigation. Multimillion dollar settlement for defendant on counterclaims.

AlterG, Inc. v. Boost Treadmills, LLC, CAND, 2018 – 2020t. Represented defendants, including founder of plaintiff, accused of patent infringement, trade secret misappropriation, and breach of contract relating to development of “unweighting” treadmills.

Elliot Kremerman v. Open Source Steel, LLC, WAWD, 2017-2018. Represented defendant accused of infringing patents and trade dress related to cannabis distillation equipment. Reached very favorable settlement upon filing counterclaims alleging unfair business practices by plaintiff.

Meta Company v. Zhangyi Ahong, et al., CAND, 2017. Represented developer of augmented reality glasses accused of trade secret misappropriation and breach of contract; obtained very favorable settlement allowing continued development and sale.

WaveStudio v. Amadeus North America, Inc., et al., NYSD, 2016-present. Represent company against claims of copyright infringement.

Elliott Kremerman v. Open Source Steel, et al., WAWD, 2017-2018. Represent company against claims of design patent infringement, trade dress infringement, and unfair competition related to sale of lab glassware.

SportPet Designs, Inc. v. Cat1st Corporation, et al., WIED, 2017-2018. Represent defendant against claims of patent and trademark infringement and unfair competition related to sale of pet products.

iFLY Holdings v. Indoor Skydiving Germany GmbH, TXED, 2015-2016. Represented wind tunnel manufacturers against claims of patent infringement and misappropriation; asserted counterclaims on unfair competition, fraudulent misrepresentation, tortious interference of economic advantage; obtained favorable claim construction ruling resulting in settlement of matter.

SyncPoint Imaging, LLC v. PixArt Imaging, LLC, et al., TXED, 2015-2018. Represent CMOS manufacturer against claims of patent infringement and breach of contract and implied covenant of good faith and fair dealing; successful inter partes review and bankruptcy action resulted in dismissal with prejudice.

In the Matter of Certain Wireless Headsets, ITC, 2015-2017. Represented foreign manufacturer of bluetooth headsets accused of patent infringement.

IPDEV Co. v. Ameranth, Inc., CASD, 2014 – 2015. Represented plaintiff/senior party in district court interference action involving patents relating to online ordering systems.

Altec, Inc. v. Edward Walker, et al., CAND, 2013 – 2015. Counsel for plaintiff in trade secret misappropriation, breach of contract matter involving hybrid technology; settlement resulted in defendant abandoning technology.

TRIC Tools, Inc. v. TT Technologies, Inc., et al., CAND, 2012 – 2015. Co-counsel for defendants alleged to infringe patents for trenchless piping; case settled following summary judgment in favor of client.

Ameranth, LLC. v. QuikOrder, Inc., CASD, 2013 – 2014. Represented two defendants in consolidated patent infringement actions (30+ total) relating to online ordering systems.

Wizie, Inc. v. Amadeus North America, Inc., MIED, 2013. Counsel for defendant in IP/breach of contract dispute relating to deployment of internet reservations software; secured early, rapid dismissal of complaint for no payment.

B-K Lighting, Inc. v. Vision3 Lighting, et al., CACD, 2006 – 2013. Lead trial counsel for start-up company accused of infringing patent covering architectural lighting fixtures. Court granted summary judgment of invalidity based on obviousness, overturned in part on appeal, then granted summary judgment of no infringement on remaining claims.

CEATS, Inc. v. Continental Airlines, et al., TXED, 2010 – 2011. Lead counsel for seven foreign airlines indemnified by Amadeus IT Group, SA (client) sued for infringement of e-commerce patents pertaining to online reservations systems; helped guide design-around that resulted in very favorable settlement.

O2 Micro Int’l. Ltd, et al. v. Monolithic Power Systems, Inc., et al., CAND, 2006 – 2009. Represented plaintiff in prosecution of patent infringement claims covering inverter controllers used in laptop and desktop LCD displays, one of multiple cases in district courts and ITC for O2 Micro.

LeVeen v. Edwards, BPAI, 1999-2002, reported at LeVeen v. Edwards, U.S.P.Q.2d 1416 (BPAI, 2000). Counsel for junior party LeVeen in interference regarding patent tissue ablation device.

Generation II Orthotics v. Medical Technology, WAWD, 1995 – 2007. Lead trial counsel in prosecution of patent infringement claims for knee braces for Canadian client; successfully appealed claim construction to Federal Circuit in 2000, obtaining reversal and remand in Generation II Orthotics, Inc. v. Medical Technology Inc., 59 U.S.P.Q. 2d 1919 (Fed. Cir. 2001); won jury verdict on retrial and successfully defended appeal, resulting in award of more than $7 million in damages and fees.